Tang Chay Seng v Tung Yang Wee Arthur

Tan Lee Meng J:

[1] This application was made shortly after the end of the trial involving a dispute between the plaintiff, Mr Tang Chay Seng (“TCS”), and his nephew, the defendant, Mr Tung Yang Wee, Arthur (“Arthur”). The dispute was over an alleged breach of the former’s registered trade marks by the latter and allegations of passing off. Arthur applied to amend his pleadings. I allowed the application and set out below the reasons for my decision.

[2] TCS, who operated a pork noodle stall known as “Hill Street Tai Hwa Pork Noodles” at Apt Blk 465 Crawford Lane #01-12, Singapore 190465, was the registered proprietor of two trade marks in relation to his business. His trade marks included the words Hill Street Tai Hwa Pork Noodle, Chinese characters (namely “???” and “???????”) as well as graphic depictions of a suspension bridge and a bowl of noodles with chopsticks. Arthur’s pork noodle stall at VivoCity Food Court (the “VivoCity Stall”) used a signboard with the Chinese characters “???”, as well as Korean and Japanese characters not found in TCS’s trade marks. Furthermore, Arthur’s sign had no English words and no depiction of either a suspension bridge or a bowl of noodles with chopsticks. Arthur, who appeared in person, pleaded that he had not infringed TCS’s trade marks and that he was not liable for passing off.

[3] During the trial, Arthur applied for leave to amend his Defence and Counterclaim in two ways. First, he sought to plead that TCS had consented to his use of the sign “???” for the VivoCity Stall. The reason for this amendment was obvious. Under s 27(1) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”), a trade mark is infringed only if a mark is used without the consent of its registered proprietor.

[4] Secondly, as one of the issues in the passing off action concerned Arthur’s of TCS’s culinary awards in an advertisement in the Lianhe Zaobao on 5 November 2008, Arthur sought to amend his Defence to assert that TCS had consented to the use by him of the culinary awards.

[5] As Arthur did not file an affidavit in support of his application to amend his Defence and Counterclaim, the hearing of the application to amend his pleadings was adjourned until he had filed the said affidavit. The amendment application was therefore heard on 8 April 2010, after the trial had been completed.

[6] In his affidavit in support of his application Arthur stated at paras 3, 4 and 7 as follows:

[7] O 20 r 5(1) of the Rules of Court (Cap 322, R 5, 2006 Rev Ed) provides as follows:

[8] Whether an amendment to pleadings should be allowed is a matter of discretion for the trial judge. The approach that courts should take with respect to amendment of pleadings was outlined by the Court of Appeal in Wright Norman and another v Oversea-Chinese Banking Corp Ltd [1993] 3 SLR(R) 640, at [6] as follows:

[9] The Court of Appeal added at [23] that the most important question the court must ask itself is whether or not the ends of justice are served by allowing the proposed amendments.

[11] The courts have been careful to differentiate between an amendment that merely clarifies an issue in dispute and one that raises a totally different issue at too late a stage. As Lords Griffiths said in Ketteman, at 220, “to allow an amendment before a trial begins is quite different from allowing it at the end of the trial to give an apparently unsuccessful defendant an opportunity to renew the fight on an entirely different defence.”

[12] Ketteman has been applied in a number of cases in Singapore: see Sin Leng Industries Pte Ltd v Ong Chai Teck and others [2006] 2 SLR(R) 235, Lam Soon Oil and Soap Manufacturing Sdn Bhd and another v Whang Tar Choung and another [2001] 3 SLR(R) 451 and Hong Leong Finance Ltd v Famco (S) Pte Ltd and others [1992] 2 SLR(R) 224.

[13] The present case was rather different from the situation envisaged in Ketteman. Here, although the trial had been completed, no new evidence was required in relation to the proposed amendment to introduce the defence of consent to the use of an allegedly infringing trade mark. The facts pertaining to the proposed defence of consent were fully stated in Arthur’s affidavit of evidence-in-chief (“AEIC”). In his AEIC, Arthur stated that TCS had given his consent to the use of “???” by him for the VivoCity Stall when he and his father met TCS on 31 July 2008. Furthermore, Arthur referred to a congratulatory message that had accompanied a pot of flowers sent by TCS to him when he started the VivoCity Stall. He pointed out that TCS’s congratulatory message, which was addressed to “???”, had included the words “May your business prosper”. Thus, Arthur asserted that TCS did not mind the use by him of “???”.

[14] TCS’s counsel, Mr Deepak Natverlal (“Mr Natverlal”), cross-examined Arthur on his assertions that TCS had consented to his use of the name“???”. Arthur’s father, Mr Tung Chye Hong, was also cross-examined on the issue of consent. Apart from questioning Arthur on TCS’s alleged consent to the use of the name “???” for the VivoCity Stall, Mr Natverlal also cross-examined Arthur on TCS’s congratulatory message.

[15] TCS was also given an opportunity to address the issue of the congratulatory message. He was cross-examined by Arthur on the message and during the trial, his counsel reiterated that his position was that despite the congratulatory message, he had not consented to the use by Arthur of the sign “???”.

[16] As for whether TCS had consented to Arthur’s use of his culinary awards to advertise the VivoCity Stall, Arthur claimed in his AEIC that he had had TCS’s “general consent” to use the said awards. He stated in his AEIC at paras 69, 71, 73, 74 and 81 that: